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2 Conversation with the EPO and the USPTO Mr. Mark Powell, Deputy Commissioner Office of International Patent Cooperation United States Patent & Trademark Office

33 Discussion Topics – Collaborative Efforts with the EPO Bilateral/Trilateral/IP5 Establishment of OIPC Common Patent Classification (CPC) Reducing Barriers to Information Sharing – Global Prosecution & the USPTO Global Dossier Patent Prosecution Highway (PPH) Common Citation Document (CCD) Hague Agreement – USPTO Office Updates Quality Initiatives Case Law

4 Collaborative Efforts with the EPO

55 International Cooperation −Cooperation among world IP offices Multilateral Trilateral (US, JP, EP est. 1983) IP5 (+CN, KR est. 2007) Bilateral −Cooperation with world IP industry groups Global Dossier Task Force

66 Improving Global Work Sharing Office of International Patent Cooperation (OIPC) Improve the quality, efficiency and predictability of patent family prosecution, thereby improving the certainty of global patent rights.

77 Cooperative Patent Classification The Cooperative Patent Classification (CPC) is a new classification system developed by the USPTO and EPO CPC launched on January 1, 2013 CPC will lead to more efficient and comprehensive searches USPTO fully implemented CPC in January 2015

88 Other Cooperative Efforts with EPO Electronic Priority Document Exchange IP5 Patent Prosecution Highway Prior Collaboration Pilots Common Understanding in other for a Compliance with EPC 141-electronic means Amendment to Rule 14 Common Citation Document System

9 Global Prosecution and the USPTO

10 Global Dossier

11 Global Dossier Global Dossier is a proposed set of business services aimed at modernizing the global patent system and delivering benefits to all stakeholders Global Dossier

12 Global Dossier Benefits – Provides a single, secure point of access for the management of dossier and examination information – Enables and encourages streamlining of office procedures among different IP offices – Increases efficiency and predictability of global patent family prosecution – Cost savings for patent applicants – will allow for more IP to be protected

13 Global Dossier Services Services will be delivered incrementally − Dossier Access – will allow users to access all available information about applications and patents in the participating offices In Spring 2015, USPTO examiners received access to the dossier information of the related IP5 applications In November 2015, the USPTO-hosted User Interface for Global Dossier will be released to the public

14 − To Applicants Monitor portfolio More uniformity in patent coverage Reduce litigation risk of inconsistent arguments Reduce ID5 burdens Reduce costs − To Examiners Facilitated work sharing Improve quality Increased uniformity and potential harmonization − To Third Parties Facilitate searching Reduce litigation costs Ease due diligence opinions Reduce translation burdens Potential Advantages

15 USPTO Global Dossier User Interface

16 Stakeholder Input on Global Dossier −IdeaScale - IdeaScale is one of the ways that OIPC will be gathering stakeholder input and feedback on Global Dossier. −Vote and comment on the various ideas −Provide additional suggestions for services and features that would improve the ability to monitor and manage related cases around the world −Focus Sessions Being planned to gather input and feedback on services −Contact the Global Dossier Team

17 Common Citation Document (CCD)

18 Common Citation Document −CCD application provides single point access to up-to-date citation data relating to the patent applications of 31 different patent offices. −It consolidates the prior art cited by all participating offices for the family members of a patent application, thus enabling the search results for the same invention produced by several offices to be visualized on a single page. −Over 21 Million citing publications listing over 175 Million Patent and Non-Patent documents

19 CCD Participating Offices ARIPO Austria Australia Belgium Bulgaria Switzerland China Cyprus Czechoslovakia Germany Denmark Eurasian European Patent Office Spain Finland France Great Britain Greece Italy Japan Korea Luxembourg Malaysia Netherlands Norway Russia Singapore Turkey Taiwan United States of America WIPO

20 OfficeCitation DataData Availability EPO Both patent and non-patent All possible procedures Citing publications from present JPO Both patent and non-patent Covers all search, examination, opposition and appeal procedures Does not include applicant citations Citing publications from present KIPO Covers search and examination Both patent and non-patent Citing publications from 2006 SIPO Covers Search only Both patent and non-patent Citing publications from June 2010 USPTO Both patent and non-patent Only applicant and search citations Made available at time of grant Search citation publications from 1947 – present WIPO / PCT Both patent and non-patent Only applicant and search citations Made available when application is published Search reports from 1978 – present CCD Data Among IP5+ Offices

21 CCD Capabilities −Provides family member search capabilities Family timelines −Shows cited patent references in either one or two viewers to compare references −Shows classification and fields searched; Expands CPC classification codes and names −Shows bibliographic data of cited references or family members

22 Using CCD

23 CCD – Navigating the Patent Records Selecting an entry in the CCD Viewer on the left frame, provides an option to view the document’s Also Published As entries in the right frame. Select the desired document from the drop-down menu, -Select publication-, for viewing in the Inspector Pane.

24 CCD – Double Inspector View The Double Inspector also allows side-by-side comparison of two different documents; to compare different documents, select the first document from the CCD Viewer, select Double inspector, right click on the second documents; select Show in inspector 2.

25 CCD - Timeline The Timeline graphically displays the timespan for a collection of patent documents. Two options exist from the drop-down menu; Single application mode or Compare mode. Displayed is the Single application mode; the selected item is in the bold blue color.

26 CCD – Classification Codes −CPC codes are listed for each document −Click on an entry to see the class schedule and definitions −Click on Show representative clippings to displays figure 1 of patents assigned that CPC

27 CCD and the User Community −Applicants can identify and address references that have been cited in related international applications at other IP offices and which may affect the patentability of their US application −Increased public awareness of the benefits of CCD would certainly lead to a more efficient and predictable international patent family prosecution.

28 The link to the CCD website: Direct access link: CCD Access

29 Patent Prosecution Highway (PPH)

30 Patent Prosecution Highway What is PPH? – A system of work sharing that improves examination efficiency by reducing duplication of effort among patent offices – Enables an applicant who has received a determination of allowable claims in an application from one office (National Stage or PCT) to obtain fast track processing of corresponding claims in application pending in other offices – Originally proposed by the JPO!

31 Principles of Global PPH – Applications in both offices share the same earliest date – The Office of Earlier Examination (OEE) found at least one claim to be allowable – All claims presented for examination must correspond to one or more of the claims found allowable – The Office of Later Examination (OLE) has not begun substantive Examination

32 Benefits of PPH −Accelerated Examination – guaranteed benefit −Increased Grant Rate – inherent benefit −Reduces Cost – inherent benefit −Reduces Pendency and legal uncertainty −Increases applicant patent strategy options Can file continuations −Always consider PPH!

33 PPH Participants with the USPTO Global PPH PrinciplesBilateral Agreements Japan United States Korea United Kingdom Canada Australia Denmark Finland Russia Spain Sweden Portugal Israel Nordic Norway Iceland Singapore Austria Hungary Columbia Philippines Czech Republic Germany Mexico* Nicaragua Taiwan Romania* Poland* * - Bilateral agreements under global principles

34 Hague Agreement

35 Hague Agreement −The United States deposited its instrument of ratification to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs with the World Intellectual Property Organization (WIPO) in Geneva, Switzerland on February 13, 2015 −The treaty went into effect for the United States on May 13, 2015 −A single filing constitutes a filing in up to 64 contracting parties

36 How does the Hague Agreement Impact Stakeholders? −Language: English, French or Spanish −File Directly with WIPO electronically or in paper Indirectly through the USPTO −Up to 100 different Designs (same Locarno Class) −Single set of formal requirements apply −Single set of fees can be paid to WIPO

37 USPTO Office Updates

38 Office of Quality Management

39 Office of Quality Management Mission: To optimize the quality of Patent products, processes and services to build a culture of process improvement and overall quality for the Patents organization. Functions: Provide support and services to improve quality throughout Patents organization Train continuous improvement at all levels Prioritize improvement initiatives in alignment with the organization’s strategic goals Monitor improved processes and facilitate the replication of best practices Identify and facilitate cross-organizational improvement initiatives Identify trends (positive and negative) to improve or replicate processes Coordinate strategic steering committee to identify and prioritize opportunities for improvement

40 Office of Quality Management Office of Process Improvement Process Audits & Recommendations/Proposed Improvements Provide Coordinated Analysis and Monitoring Advise on Process Improvement Analyze Trends Define Standards/Metrics Office of Process Improvement Process Audits & Recommendations/Proposed Improvements Provide Coordinated Analysis and Monitoring Advise on Process Improvement Analyze Trends Define Standards/Metrics Office of Patent Training Provide Training Assistance Provide enhanced Practices/Procedure Recommend Corrective Action & Preventive Action as needed Review and Analysis Practice/Procedure to enhance their quality Analyze Trends Define Standards/Metrics Advance Legal and Technical Training Office of Patent Training Provide Training Assistance Provide enhanced Practices/Procedure Recommend Corrective Action & Preventive Action as needed Review and Analysis Practice/Procedure to enhance their quality Analyze Trends Define Standards/Metrics Advance Legal and Technical Training Office of Ombudsman and Stakeholder Outreach Incident Management Complaint Handling Internal/External feedback Trend Analysis Define Standards/Metrics Feedback External Partnering/Engagement Office of Ombudsman and Stakeholder Outreach Incident Management Complaint Handling Internal/External feedback Trend Analysis Define Standards/Metrics Feedback External Partnering/Engagement Office of Patent Quality Assurance Quality Review ISO Compliance Analyze Trends Define Standards/Metrics Feedback Office of Patent Quality Assurance Quality Review ISO Compliance Analyze Trends Define Standards/Metrics Feedback Office of Process Improvement (OPI) Office of Patent Training (OPT) Office of Patent Quality Assurance (OPQA) Office of Ombudsman/ Stakeholder Outreach

41 Enhanced Patent Quality Initiative Pillars of Enhanced Patent Quality

42 Internal Steps to Improve Patent Quality Current Internal Initiatives – Quality Assurance Specialist Details – GS-14 Trainer Program Expansion – Search Analysis Program – Peer Interaction Meetings – Review Quality Assurance Specialist Assistance in Technology Center – Interview Specialists/Facilitators – Conduct Quality Awareness Campaign and Training 35 USC § 112(f) 35 USC § 101

43 Current External Initiatives – Quality Webinar Series – Ombudsman Hours by Time Zone – Patent Quality Roadshows (Fall 2015) – Federal Register Public Comments Analysis – Patent Quality Summit Comments Analysis External Steps to Improve Patent Quality

44 Patent Quality Summit Emerging Themes Providing a clear record throughout prosecution Differentiating between the measures of the patent process and the patent product The usefulness (necessity) of face-to-face interviews

45 Federal Register Notice Comment Period – Deadline extended to May 20, 2015 Comments and suggestions will be consolidated into database for consideration while planning future actions with regard to quality initiative Complete summit video available for viewing online Visit USPTO’s Enhanced Patent Quality Initiative at initiative Patent Quality Summit

46 Case Law

47 Recent Supreme Court Activity Regarding Judicial Exceptions

48 35 U.S.C. § Judicial Exceptions Supreme Court has long held that § 101 excludes certain subject matter from patent eligibility: – Abstract Ideas – Laws of Nature/Natural Principles – Natural Phenomena (including Products of Nature/Natural Products)

49 Eligibility Guidance The USPTO has issued updated examination guidance after each Supreme Court decision Most recently, 2014 Interim Guidance on Patent Subject Matter Eligibility (Dec. 16, 2014) – Incorporates principles from the body of legal precedent, in particular Alice Corp., Myriad and Mayo – Addresses areas highlighted by public feedback

50 Additional Resources General page for examination guidance and training materials Specific page for the December 2014 Interim Eligibility Guidance Includes the Guidance document, additional claim examples and relevant case law All updates will be posted to this page

51 Thank You!

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